PLANSEE SEDownload PDFPatent Trials and Appeals BoardDec 30, 20212021000514 (P.T.A.B. Dec. 30, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/571,600 11/03/2017 ANDRE DRONHOFER WTH-82510 8126 24131 7590 12/30/2021 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER BRAYTON, JOHN JOSEPH ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 12/30/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@patentusa.com office@patentusa.com vrahimis@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRE DRONHOFER, CHRISTIAN LINKE, and ELISABETH EIDENBERGER Appeal 2021-000514 Application 15/571,600 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11–20. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Plansee SE. Appeal Br. 1. Appeal 2021-000514 Application 15/571,600 2 CLAIMED SUBJECT MATTER The claims are directed to a target for a cathode sputtering installation. Claim 11. The target material is sputtered by plasma means and deposited as a thin layer onto a substrate. Spec. 1:4–6. Because the target is rotated during operation and due to cyclical thermal stress on the target surface, various mechanical stresses arise in the target. Id. at 4:12–14. This may also result in a loss of vacuum tightness due to failure of the material- integral or form-fitting connection between the target body and the connector pieces. Id. at 4:16–18. The connection points are said to be particularly susceptible to crack formation. Id. at 4:20. The claimed subject matter is purported to provide an improved tubular target having an extended service life and a reduced tendency towards crack formation. Id. at 4:24–25. Independent claim 11, reproduced below, is illustrative of the claimed subject matter with the key limitation on appeal italicized: 11. A target for a cathode sputtering installation, the target comprising: a tubular target body formed of a sputtering material; at least one connector piece connected to said target body in a materially integral manner and protruding from said target body for connecting said target body to the cathode sputtering installation; said target body being connected to said at least one connector piece in a vacuum-tight manner and so as to be secured against twisting; and at least one damping element disposed between said at least one connector piece and said target body. Appeal Br. 15 (Claims App.). Appeal 2021-000514 Application 15/571,600 3 REJECTIONS2 I. Claims 11–15 and 18–20 under 35 U.S.C. § 103 as unpatentable over Heinrich3 in view of Weigert4; II. Claim 16 under 35 U.S.C. § 103 as unpatentable over Heinrich in view of Weigert and Lippens5; and III. Claim 17 under 35 U.S.C. § 103 as unpatentable over Heinrich in view of Weigert and Ueda.6 Final Act. 3–6. OPINION The Examiner’s findings and conclusions in support of the grounds of rejection with respect to claim 11 appear at pages 3–4 of the Final Office Action. We need only discuss claim 11. The dispositive issue on appeal is whether the Examiner provided sufficient reasoning for the skilled artisan to have combined the teachings of Heinrich and Weigert to arrive at the claimed subject matter. Final Act. 3–4. Because the Examiner has failed to do so on this record, we reverse the rejections on appeal. 2 In the Answer, the Examiner withdrew the rejection of claim 14 under 35 U.S.C. § 112(d) for failing to comply with the proper dependent form requirement. Ans. 7. 3 DE 10 2013 103 472 B4, published Oct. 9, 2014. We rely on the uncontested English-language machine translation. 4 DE 10 2004 058 316 A1, published June 8, 2006. We rely on US 2006/0151320 A1 as an uncontested English-language translation. 5 US 5,904,966, issued May 18, 1999. 6 US 6,787,011 B2, issued Sept. 7, 2004. Appeal 2021-000514 Application 15/571,600 4 In rejecting claim 11, the Examiner determines that the ordinary skilled artisan would have modified Heinrich’s target for a cathode sputtering installation with Weigert’s target body, which is connected to a fastening device. Id. at 9. Specifically, the Examiner’s proposed modification would have required the artisan to have connected Heinrich’s holding device 102 and target tube 410 in a materially integral manner. Heinrich Figs. 4A–4D. According to the Examiner, one of ordinary skill in the art would have been motivated to modify Heinrich’s target because Weigert teaches that doing so provides better thermal conductivity. Final Act. 4 (citing Weigert ¶ 7). Appellant challenges the Examiner’s stated reason to combine Heinrich and Weigert because Heinrich’s “target tube 410 needs to be removably attached to the holding device of the vacuum operating component 100” (i.e., the claimed “cathode sputtering installation”). Appeal Br. 8 (emphasis omitted). Appellant questions how Weigert’s relied-upon passage would have motivated one of ordinary skill in the cathode sputtering art to redesign Heinrich’s cathode sputtering installation, which requires a sputtering material source. Id. (asserting that it is well-known in the art “that a target is . . . a sputtering source for a cathode sputtering installation, and . . . the target material is sputtered by the plasma and is deposited as a thin layer on a substrate”) (emphases omitted). In particular, Appellant contends that Heinrich’s installed target requires replaceability because the target sputtering material source is consumed during the sputtering process. Id. at 9 (arguing that “the person of ordinary skill in the art understands that the tube target 410 needs to be removably installed so that the tube target 410 can be replaced.”). Appeal 2021-000514 Application 15/571,600 5 Appellant’s arguments are persuasive of reversible error. Although the Examiner’s rejection asserts that the ordinary skilled artisan would have been motivated to connect Heinrich’s holding device 102 and target tube 410 in a materially integral manner (Final Act. 4), the Examiner fails to provide sufficient reasons why such a change would have been desired in view of the apparent drawbacks inherent in such a change. See Ans. 8 (“Weigert’s materially integral connection of soldering/welding inherently provides for releasability because a solder joint can be melted and welds cut [into] separate pieces.”). On this record, we are not persuaded that one of ordinary skill in the art would have been motivated to materially integrate Heinrich’s target tube 410 and holding device 102, and thus forego the ease of replacing Heinrich’s target tube 410, for the stated benefit of “better thermal conductivity.” Final Act. 4. To establish a prima facie case of obviousness, it is not enough to assert what modifications the skilled artisan could have made to the prior art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))). The appeal record does not adequately explain why the skilled artisan would have been sufficiently motivated to modify the teachings of Heinrich in the manner proposed, particularly in view of the countervailing reason not to modify these references, i.e., melting of solder joints and cutting welds. For this reason, we do not sustain the Examiner’s obviousness rejection. Appeal 2021-000514 Application 15/571,600 6 Remaining claims 12–20 depend from claim 11, and are similarly rejected over Heinrich and Weigert either with or without Lippens or Ueda. Final Act. 3–6. Thus, for the reasons outlined above with respect to claim 11, we also reverse the rejections of dependent claims 12–20 under 35 U.S.C. § 103. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11–15, 18–20 103 Heinrich, Weigert 11–15, 18– 20 16 103 Heinrich, Weigert, Lippens 16 17 103 Heinrich, Weigert, Ueda 17 Overall Outcome 11–20 REVERSED Copy with citationCopy as parenthetical citation